 |
|
Articles Quebec launches French Charter awareness campaign that impacts display of non-French trade-marks on signage. The Office québécois de la langue française, the body responsible for applying and enforcing the Quebec Charter of the French language, has recently launched an awareness campaign that includes a policy that impacts upon the use in Quebec of non-French trade-marks on signage by retailers. Canadian expungement proceedings. Section 45 of the Canadian Trade-marks Act provides a means of summarily expunging (cancelling) trade-marks from the Register that are no longer in use.
Noteworthy cases Recent Court decisions Mövenpick Holding AG v. Exxon Mobil Corporation and Attorney General (Registrar of Trade-marks), 2011 FC 1397 — Expert evidence of linguists relating to the meaning of words is unnecessary and unhelpful. The Federal Court dismissed an appeal from a decision of the Trade-marks Opposition Board that held that Exxon Mobil's trade-mark MARCHÉ EXPRESS was not clearly descriptive of "convenience stores" or "dépanneurs" and was not confusing with Mövenpick's MARCHÉ trade-mark for use in association with restaurants. This decision is noteworthy as the Court's rejection of linguistic expert evidence is consistent with the Supreme Court of Canada's view, in Masterpiece v. Alavida, 2011 SCC 27, that expert testimony has a limited role in trade-mark cases. Clic International Inc. v. Convenience Food Industries (Private) Limited and The Registrar of Trade-marks, 2011 FC 1338 — Expungement based on use of modified version of trade-mark. The Federal Court upheld a decision of the Registrar of Trade-marks to expunge the trade-mark LAZIZA & Design pursuant to section 45 of the Trade-marks Act on the basis that the use of a modified version of the trade-mark was insufficient to constitute use of the trade-mark as registered. This decision is a helpful reminder to trade-mark owners that in order to avoid possible expungement of their trade-mark registrations under section 45, the use of the trade-mark should be in substantially the same form as the trade-mark registered. McCallum Industries Limited v. HJ Heinz Company Australia Ltd., 2011 FC 1216 — Who is a "person interested" in order to bring expungement proceedings under section 57 of the Trade-marks Act? The Federal Court has clarified under what circumstances a respondent in a section 57 expungement proceeding might challenge an applicant's standing to bring the application. This case is of particular importance as it provides a basis for determining when an applicant might not qualify as a "person interested" under the Trade-marks Act, including, for example, where the applicant has delayed bringing the application.
Trade-marks Opposition Board decisions Head Technology GmbH v. Jimmy Tees Inc., 2011 TMOB 235 — Example of the evidence required to satisfy the opponent's initial burden in proving that there was no continuous use of the applied-for mark under section 30(b) of the Act. The Trade-marks Opposition Board refused an application to register the trade-mark STUNT HEADS & Design in part on the basis that there was no continuous use of the trade-mark in association with the relevant wares. Notably, the Opposition Board held that the opponent satisfied its light initial burden by establishing that the applicant was dissolved at some point during the relevant period. BBY Solutions, Inc v. Brick Warehouse LP, 2011 TMOB 199 — Unique forms of advertising may constitute use of a mark in association with services. The trade-mark YOUR BEST BUY IS AT THE BRICK was maintained in a section 45 cancellation proceeding for use in association with services that included the operation of a retail store and other retail services. This case is of particular importance as it establishes that unique forms of advertising, such as an advertisement placed on the side of a delivery vehicle that displays the trade-mark, can under some circumstances constitute use of a mark in association with services.
CIRA domain name disputes SUNBRELLA.CA – Glen Raven Inc. v. Tomislav Kotarac, CIRA Dispute No. 00173 — Bad faith may be presumed when the domain name is used for the purpose of commercial gain by creating a likelihood of confusion. Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, expanded the circumstances in which a complainant can show that a domain was registered in bad faith by adding a fourth enumerated circumstance and making the list of circumstances non-exhaustive. The Panel in this case found bad faith under the fourth enumerated circumstance and also held that the actions of the registrant can be seen as contrary to the general nature of the bad faith impugned by the Policy. This is the first decision of the Panel to consider the new policy.
|
RANKINGS AND RECOGNITIONS Smart & Biggar/ Fetherstonhaugh chosen by Managing Intellectual Property as Canada's IP Firm of the Year, Trademark Firm of the Year, and recognized for success with the award for Canadian Case of the Year Smart & Biggar/Fetherstonhaugh earns highest ranking in Managing Intellectual Property's 2012 patent survey Smart & Biggar/Fetherstonhaugh achieves top ranking in The Lexpert®/American Lawyer Guide to the Leading 500 Lawyers in Canada Smart & Biggar/Fetherstonhaugh recognized in the Lexpert® Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada, 2011 edition Smart & Biggar/ Fetherstonhaugh tops the rankings in Canadian IP law in the 2011 edition of Chambers Global — The World's Leading Lawyers for Business Smart & Biggar/ Fetherstonhaugh tops the rankings in The Best Lawyers in Canada® Smart & Biggar/ Fetherstonhaugh tops the rankings in Who's Who Legal: Canada 2011 CANADIAN PRACTICE TIP Canada has an unusual provision in its Trade-marks Act ("the Act") that often creates difficulties for unsuspecting businesses when acquiring Canadian trade-mark rights. |
|||||||||||||
|
To offer your feedback on this newsletter or any of its articles, please contact:
|
|
|||||||||||||
|
Ottawa / Toronto / Montreal / Vancouver |
